Westmore · UDRP DecisionAccutane365.click
The Panel ordered transfer of <accutane365.click>. It found the domain confusingly similar to the Complainant’s ACCUTANE trademark because it incorporated the mark in full and the addition of “365” and the “.click” gTLD did not avoid confusing similarity. The Respondent’s use of the domain for an online pharmacy selling the trademarked goods and other goods, without disclosing the relationship with the Complainant, established a prima facie absence of rights or legitimate interests. The same use showed knowledge of the mark and an intentional effort to attract consumers for commercial gain. The website’s later inactivity did not prevent a bad-faith finding.
The timeline behind accutane365.click
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind accutane365.click — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision illustrates how a domain combining a pharmaceutical mark with “365” may remain confusingly similar and how online-pharmacy use can determine both the legitimate-interest and bad-faith inquiries. It also highlights an evidentiary limit: a complainant cannot assume that trademark registrations held by a related entity will be considered without evidence establishing authorization or entitlement to rely on them.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Marina Kovtun Case No. D2016-0852 1. The Parties The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented. The Respondent is Marina Kovtun of Moscow, Russian Federation. 2. The Domain Name and Registrar The disputed domain name <accutane365.click> is registered with Uniregistrar Corp (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2016. On April 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2016. The Center appointed Gregor Vos as the sole panelist in this matter on June 8, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is part of a large global research-focused healthcare group in the field of pharmaceuticals and diagnostics. The Complainant is the owner of the International trademark registrations No. 840 371 (ACCUTANE, registered on December 6, 2004) and No. 450 092 (ROACCUTAN, registered on December 13, 1979). The Complainant also made reference to additional national trademark registrations for ROACCUTANE, held by its related company Roche Products Ltd. The Respondent registered the disputed domain name <accutane365.click> on April 12, 2016. The disputed domain name resolved to an online pharmacy where the Respondent offered the Complainant’s Accutane mediation for sale. At the time of this decision, the website at the disputed domain name is inactive. 5. Parties’ Contentions A. Complainant The Complainant uses the trademarks ACCUTANE, ROACCUTAN and ROACCUTANE to designate a prescription drug indicated for the treatment of severe nodular and/or inflammatory acne conglobate or recalcitrant acne. The Complainant contends that the disputed domain name is composed of the Complainant’s trademark ACCUTANE in its entirety and of the figure “365”. The Complainant alleges that “365” is a generic term commonly referring to 365 days in a year and that the disputed domain name is therefore not substantially distinct from the Complainant’s trademark. The Complainant contends that the generic Top-Level Domain (“gTLD”) “.click” does not sufficiently distinguish the disputed domain name from the trademark ACCUTANE. The Complainant contends that the disputed domain name, <accutane365.click>, is confusingly similar to the ACCUTANE trademark. The Complainant contends that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the Complainant’s mark, ACCUTANE. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent must have had knowledge of the Complainant’s prior rights to the trademark ACCUTANE. The Complainant argues that the Respondent’s website under the disputed domain name displays an online pharmacy webpage in order to intentionally attempt to attract Internet users to an online pharmacy store with its use of the disputed domain name. The Complainant holds that the disputed domain name was therefore registered and is being used in bad faith. The Complainant requests the Panel to issue an order that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To make its case, the Complainant must meet all requirements under paragraph 4(a) of the Policy. The Complainant must prove that: i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; ii) the Respondent has no rights or legitimate interest in respect of the disputed domain name; and iii) the disputed domain name has been registered and is being used in bad faith. The Panel notes that in making its case, the Complainant made reference to several national trademark registrations for ROACCUTANE. Copies of these registrations that were submitted show that these are owned by a different legal entity, which the Complainant states is its subsidiary in the United Kingdom of Great Britain and Northern Ireland. Although a licensee of a trademark or a company related to the registered owner ( e.g ., a subsidiary) of a trademark may have rights in a trademark under the UDRP, evidence of such license and/or authorization should be submitted (see e.g ., Komatsu Deutschland GmbH v. Ali Osman / ANS , WIPO Case No. D2009-0107 ). As the Complainant failed to submit such evidence of a licence and/or authorization, it is unclear whether it is entitled to invoke these trademark registrations. The Panel will therefore disregard these registrations for ROACCUTANE. A. Identical or Confusingly Similar To meet the first requirement of the UDRP, the disputed domain name must be identical or confusingly similar to a trademark owned by the Complainant. In general, this means that the relevant trademark needs to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. This involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the disputed domain name. The Panel finds that the Complainant owns the trademark ACCUTANE that is fully incorporated in the disputed domain name. The disputed domain name <accutane365.click> consists of “accutane” which is the Complainant’s registered trademark in its entirety and “365”. The Panel concurs with the panel in LEGO Juris A/S v. shenglan li , WIPO Case No. D2012-0373 , in which the figure “365” was found to be a generic term commonly referring to 365 days in a year. The addition of a merely generic term to a trademark in a domain name is in this case insufficient to avoid a finding of confusing similarity. The disputed domain name includes the gTLD “.click”. The Panel concurs with the panel in Zions Bancorporation v. Mohammed Akik Miah , WIPO Case No. D2014-0206 , in that the gTLD does not distinguish the disputed domain name from the Complainant’s mark. Based on the above, the Panel concludes that the Complainant has met the first requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests As it is generally recognized that it is hard for complainants to prove a negative, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. If such a prima facie case is made, the burden of production shifts to the respondent. If the respondent then fails to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name, the complainant will be deemed to have satisfied paragraph 4(a)(ii) of the Policy ( Croatia Airlines d.d. v. Modern Empire Internet Ltd. , WIPO Case No. D2003-0455 ). The Panel finds that from the Complainant’s submitted screenshots it follows that the Respondent has used the disputed domain name to resolve to an online pharmacy that also sells other goods than the trademarked goods, without disclosing the Respondent’s relationship with the Complainant. The Panel finds that this makes the Complainant’s prima facie case (see Americas, Inc. v. ASD, Inc. , WIPO Case No. D2001-0903 ; and Research in Motion Limited v. One Star Global LLC , WIPO Case No. D2009-0227 ). The Respondent did not respond to the allegations of the Complainant. The Panel therefore concludes that the Complainant has met the second requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith From the Complainant’s undisputed contentions and evidence it follows that the Respondent uses the disputed domain name to redirect Internet users to an online pharmacy that sells both the trademarked goods and other goods, without disclosing the Respondent’s relationship with the Complainant. These admissions support the view that the Respondent had knowledge of Complainant’s trademark when registering the disputed domain name and has deliberately used the disputed domain name in order to mislead consumers into visiting the Respondent’s website for commercial gain ( F. Hoffman-La Roche AG v. Pinetree Development, Ltd , WIPO Case No. D2006-0049 ; and Pfizer Inc. v. jg a/k/a/ Josh Green , WIPO Case No. D2004-0784 . The fact that the website at the disputed domain name is now inactive does not prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003 ). The Panel finds that the above sufficiently constitutes a registration and use in bad faith pursuant to paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <accutane365.click> be transferred to the Complainant. Gregor Vos Sole Panelist Date: July 6, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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